Federal Circuit Nos 2013-1600, -1601, -1602, -1603, -1604, -1605, -1606, -1607, -1608, -1609, -1610, -1611, -1612, -1613, -1614, -1615, -1616, -1617, -1618

In the first Federal Circuit decision applying the subject-matter eligibility principles for abstract ideas espoused in Alice Corp. v. CLS Bank, 573 U.S. ___, No. 13-298, the Federal Circuit determined claims directed to a device profile and a method for creating the device profile were patent ineligible as being directed to non-statutory subject matter under 35 U.S.C. § 101.

The claims at issue are directed to a “device profile,” having both color information and spatial information of a device, for converting image information between a source device, for example a digital camera, and a destination device, such as a monitor or printer. The district court had granted summary judgment that claims directed to a “device profile” and to a method of generating the device profile were patent ineligible subject matter under section 101. On appeal, the Federal Circuit held invalid the claims directed to the “device profile” itself as mere intangible color and spatial information. The Federal Circuit further considered whether method claims directed to generation of the “device profile” satisfied the requirements of 35 U.S.C. § 101.

In accordance with the Alice Corp. decision, the Federal Circuit firstly determined that the method claims related to the generation of the “device profile” were directed to an abstract idea: a process of gathering, combining, and organizing data through mathematical correlations untied to any specific structure or machine.

The Federal Circuit then secondly determined whether the claims added significantly more than the abstract idea itself, namely additional features capturing an application of the “device profile” such that the claim does not solely encompass the “device profile” itself. Finding that the claims did not recite any capturing, transforming, or rendering of a digital image employing the device profile, the Federal Circuit concluded that the “device profile” generation recited by the method claims did not transform the claim into a patent-eligible application of an abstract idea, but rather the claims simply captured any and all uses of the device profile. As such, apart from providing an initial example of the Alice Corp. analysis, this decision confirms the significance that application of an abstract idea is the most likely avenue to subject-matter eligibility.